Re: Opposition by GALIPOGLU HIDROMAS HIDROLIK OTOMOTIV SANAYI VE TICARET ANONIM SIRKETI to an application under section 92 of the Act by HMS MYG b.v. for removal of trade mark number 1290044 (7) – BMS GALIPOGLU...

This matter concerned an opposition by GALIPOGLU HIDROMAS HIDROLIK OTOMOTIV SANAYI VE TICARET ANONIM SIRKETI (the Opponent) to an application by HMS MYG b.v. (the Applicant) for the removal of trade mark number 1290044. The dispute arose from the Applicant's application to remove the trade mark under section 92 of the Act, alleging non-use. The decision was made by Nicholas Smith.

The primary legal issue before the court was whether the Opponent had established use of the trade mark in Australia during the relevant period, as required by section 100 of the Act, to resist removal from the Register. Given that the trade mark had been registered for more than five years, the court focused on the grounds for removal under section 92(4)(b) of the Act. A further consideration was whether the court should exercise its discretion under section 101(3) of the Act to allow the trade mark to remain on the Register, despite a finding of non-use.

The court found that while the Opponent had used a logo in Australia for piston pumps and other hydraulic devices, this use did not constitute use of the exact registered trade mark. The court applied the test for substantial identity between the registered trade mark and the logo, considering the essential features and the total impression of resemblance. The court noted that the Opponent had ceased using the registered trade mark around 2007, adopting a similar but not substantially identical logo thereafter. The court also considered the discretion to retain the mark on the Register, evaluating factors such as abandonment, residual reputation, and the commercial interests of the parties. However, the court was not persuaded by the Opponent's submissions, finding that the lack of evidence of use of the registered trade mark outweighed the Opponent's private commercial interests and the public interest in the integrity of the Register.

Consequently, the court decided that the Opponent had not established its opposition to removal, and the trade mark should be removed from the Register in respect of all goods for which it was registered.